PTAB

IPR2021-00878

Microsoft Corp v. D3D Technologies Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method and Apparatus for Three Dimensional Viewing of Images
  • Brief Description: The ’691 patent discloses a method for viewing three-dimensional medical images generated from a plurality of two-dimensional radiological slices. The core of the invention is a movable, non-zero volume "3D cursor" used to select a sub-volume of interest within the 3D image space for further processing.

3. Grounds for Unpatentability

Ground 1: Obviousness over Acosta and Tomoda - Claims 1-5, 9, and 13-15 are obvious over Acosta in view of Tomoda.

  • Prior Art Relied Upon: Acosta (Application # 2006/0279569) and Tomoda (Application # 2004/0059214).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Acosta disclosed all core elements of independent claim 1. Acosta taught generating a 3D volume data set from 2D slices for medical imaging. It further taught a "3D sampling probe" with a non-zero volume (the claimed "3D cursor") that can be generated, displayed, and moved within the 3D volume in response to user input (e.g., a mouse). Tomoda taught that after a 3D region of interest (ROI) is selected in a medical image, the system can search for and display the original 2D image slices corresponding to that selected ROI. Petitioner contended that combining Acosta's movable 3D cursor for selecting an ROI with Tomoda's method of retrieving the underlying 2D slices for that ROI rendered the final step of claim 1 obvious. Dependent claims were allegedly met by Acosta's teachings on modifying the probe's size and color (claim 2), moving the probe (claim 3), rotating the probe (claim 5), saving data (claim 13), and displaying data (claim 14).
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Acosta and Tomoda to improve medical image analysis. While Acosta provided a tool to select a 3D volume, a physician would benefit from viewing the original, high-resolution 2D radiological slices corresponding to that volume, as taught by Tomoda. This improved viewing would provide a better understanding of tissue content within the 3D cursor, leading to better diagnosis and treatment planning.
    • Expectation of Success: A POSITA would have a high expectation of success because both Acosta and Tomoda operated in the same technical field of 3D medical imaging, used similar data (3D volumes built from 2D slices), and addressed the common goal of analyzing specific regions of interest. Integrating Tomoda's data retrieval function into Acosta's visualization system was a predictable application of known techniques.

Ground 2: Obviousness over Acosta, Tomoda, Deering, and Schoolman - Claims 7 and 8 are obvious over the combination of Acosta, Tomoda, Deering, and Schoolman.

  • Prior Art Relied Upon: Acosta (’569 application), Tomoda (’214 application), Deering (Patent 5,287,437), and Schoolman (Patent 5,488,952).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Acosta and Tomoda by adding references for head and eye tracking. Deering disclosed a stereo display system that used head and eye tracking to update the displayed 3D image based on the viewer's gaze and head position, thereby converging the focus of the viewer's eyes on a "hot spot" (claim 7). Schoolman taught using a head-worn display unit (HDU) for viewing 3D stereoscopic medical images (claim 8). Petitioner argued it would be obvious to integrate Deering's advanced tracking into the Acosta/Tomoda system and implement it on a Schoolman-type HDU to create a more immersive and intuitive medical visualization tool.
    • Motivation to Combine: A POSITA would be motivated to add Deering's tracking features to more closely mimic a real-world visual experience, where the perceived image changes with head and eye movement. Using a Schoolman HDU would offer greater freedom and flexibility over a fixed monitor, enhancing realism for applications like surgical training or planning.
    • Expectation of Success: The combination was predictable, as it involved integrating well-known stereoscopic display and tracking technologies (Deering, Schoolman) into an existing 3D medical imaging framework (Acosta, Tomoda) to achieve the known benefits of immersive visualization.

Ground 3: Obviousness over Acosta, Tomoda, and Zhou - Claims 20 and 21 are obvious over Acosta and Tomoda in view of Zhou.

  • Prior Art Relied Upon: Acosta (’569 application), Tomoda (’214 application), and Zhou (Application # 2016/0129637).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addressed independent claim 20, which added steps for constructing a custom object for computerized manufacturing. After delineating a volume of interest with the 3D cursor (taught by Acosta/Tomoda), claim 20 required subtracting non-interest tissue, smoothing irregular edges, and passing the volume to manufacturing. Petitioner argued that Zhou taught this entire workflow. Zhou disclosed creating 3D-printer-ready models from medical scans by segmenting an anatomical structure, masking/removing other scan data ("subtracting tissue"), applying a low-pass filter ("smoothing process"), and sending the resulting model to a 3D printer ("computerized manufacturing").
    • Motivation to Combine: A POSITA would combine the references to allow a user to create physical, patient-specific anatomical models. A surgeon could use the Acosta/Tomoda system to select a precise ROI (e.g., a tumor or bone fracture) and then use Zhou's methods to generate a physical 3D model for surgical planning, patient education, or creating custom implants.
    • Expectation of Success: The combination represented an application of a known technique (Zhou's image-to-3D-print method) to a known system (Acosta/Tomoda's 3D image selection tool) for the predictable purpose of creating physical models from medical scans.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations with Betting (Patent 7,242,402) for removing tissue outside the cursor, Traughber (Application # 2015/0110374) for counting voxels, Shimotani (Application # 2013/0076876) for displaying cardinal directions, Argiro (Patent 5,986,662) for applying image processing like contrast enhancement, and Cevidanes (a 2006 journal article) for registering and superimposing images from different time points.

4. Key Claim Construction Positions

  • "3D Cursor" (claims 1-21): Petitioner argued that, based on the patent's description and prosecution history, a "3D cursor" should be construed as "a 3D indicator movable within a 3D image." This construction emphasizes that the cursor is a graphical indicator used to select a volume of interest, distinguishing it from an ordinary single-point cursor that selects a single 3D point—a distinction the patentee made during prosecution to overcome prior art.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be inappropriate. The petition was filed early in the co-pending litigation, well before the one-year bar, with minimal investment in the district court case (e.g., no depositions taken, no Markman hearing held). Petitioner contended the merits of the petition were particularly strong, relying on prior art materially different from that considered during prosecution. Further, Petitioner stipulated it would not pursue the same invalidity grounds in district court if the IPR was instituted, which would promote judicial efficiency and avoid duplicative efforts.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-9 and 11-21 of the ’691 patent as unpatentable under 35 U.S.C. §103.